The Singapore Patent regime sees some amendments with further changes being proposed in respect of PCT national phase applications

With the amendments to the Singapore Patent Rules with effect from 2nd June 2006 patent applicants may now rely on a corresponding patent granted and final examination results from the Republic of Korea for the purpose of grant in Singapore.

This therefore adds to the existing number of countries recognized by the Singapore Intellectual Property Office of Singapore (“IPOS”) in respect of such reliance, being Australia, Canada, New Zealand, Japan, the United Kingdom, the United States of America and patents granted at the European Patent Office (in respect of applications for a European patent filed in the English language).

However, as the amendments come into force on 2nd June 2006 they are applicable only to Singapore application with a priority date (or filing date, if no priority claim) on or after 2 June 2006. It should be noted that a verified English translation of the Korean patent will be required for submission.

The Proposed Changes

The IPOS has recently invited feedback and consultation from patent users on the “new” prosecution timelines for Singapore PCT national phase applications with an international filing date on or after 1 July 2004. The reason for this is that because of the 30-month national phase entry deadline, the “1 July 2004” changes will be effectively seen in action at the beginning of this year, 2006.

Another reason for the feedback and consultation process was to address concerns of unresolved issues arising from the International Search and International Preliminary Examination process, which would affect the Singapore national phase.

Currently, there is no local search and examination for Singapore PCT national phase applications (Chapter I and II). They are deemed to have undergone the same during the International phase. If Applicants wish to request for request search and/or examination, they may do so by paying a hefty “block extension fee” or to enter the Singapore national phase early and request for a search and/or examination report by 21 months (from the priority date). The latter option appears to be contrary to the fundamental basis of requiring action by the Applicants before the 30-month national phase deadline.

The Applicants may rely on the International Preliminary Examination Report (“IPRP”) or final results issued in the corresponding applications recognised by IPOS. Under the “1 July 2004” changes, the due date for payment of grant fee has been shortened from 54 to 42 months from the priority date. Technically, applicants would have to review their IPRP and examination results in the corresponding applications and also pay the grant fee in less than 12 months of entering the Singapore national phase.

Generally, examination results do not usually issue within 12 months. The problem is further aggravated by the IPRP or even the ISR not being issued within 42 months from the priority date. Applicants have no choice but to request for a block extension to defer the deadlines to 60 months from the priority date, or file a divisional application.

In view of the above discussion, IPOS is proposing to allow request for search and examination and also extend to the timeline to submit the IPRP or results from corresponding application, and the timeline to pay the grant fee. Applicants may request for search and examination / examination by the 39-month deadline. Applicants may also submit the IPRP or results from corresponding application, and pay the grant fee by the 60-month deadline. These proposed amendments are expected to come into effect on 1 October 2006. Under the proposed transitional provisions, the new amendments and deadlines will be applicable if the relevant deadlines are extended beyond 1 October 2006.

The proposed changes should streamline the PCT application process in Singapore when the applications come into the national phase.